DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/909434, filed on 09/05/2022.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Specification
The abstract of the disclosure is objected to because:
It repeats information given in the title. Specifically, the first sentence of the abstract, “A method for communicating with a fingerprint card to perform transaction …” repeats the title nearly verbatim.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification include, but are not limited to:
Page 1 – “When a PIN code is inputting by the card holder, the PIN code is easily to be leaked because of peeping at PIN code or the PIN code is intercepted by a terminal, therefore security risk of information of card holder is coming up.”
Page 12 – “Step 105, the card returns a third instruction response of fingerprint type comprising a second Application Interchange Profile and a second application file locator to the terminal;”
Broadly speaking, the specification is poorly translated which makes the specification difficult to parse. A thorough review and correction of the extensive grammatical and syntactical errors throughout the specification is recommended.
The disclosure is objected to because of the following informalities:
The acronym(s), “IC Card”, and “POS” appear(s) with no indication to what they refer. In some cases, the acronym appears numerous additional times throughout the disclosure. Standard practice is to include the fully spelled out name or phrase on first usage, followed immediately by the acronym in parentheses (i.e., “… Integrated Circuit (IC) Card …”), and thereafter use only the acronym.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 7, and 13:
Claim 1 recites, “… receiving, by the fingerprint card, an instruction … from a terminal …”. The claim also recites, “… sending … to the terminal a waiting time extending instruction …”. The claim also recites, “… returning … to the terminal a response comprising an Application Interchange Profile and an Application File Locator …”. The claim also recites, “… returning, … to the terminal a read record …”. Claims 7 and 13 recite similar language. These limitations lack adequate written description. Neither the claims nor specification provide any description of a means by which the “fingerprint card” may communicate with the “terminal.” Page 6 of the specification teaches that the “IC card can be … capable of transaction communication with a reader device using wireless communication technology.” However, this does not constitute adequate written description, as no structure is described or illustrated which could perform this function. Where page 6 of the specification goes on to teach that “the IC card … includes a card body, an IC chip, a fingerprint scanner, and a control unit.” The specification is silent as to any other hardware or circuitry, particularly any hardware or circuitry capable communicating with a “reader device” or terminal, wireless or otherwise. It is therefore unclear to one skilled in the art that the inventor(s) had possession of the claimed invention at the time of filing.
Regarding claims 2-6, 8-12, and 14-18:
They are dependent on one or more rejected claims, and thus inherit those rejections. This rejection could be overcome by overcoming the rejection(s) to any claims upon which these claims depend, or by amending the claims such that they are no longer dependent on any rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim(s) 1-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim(s) 1, 7, and 13:
Claim 1 recites, “… returning, by the fingerprint card, to the terminal a read record according to the Application File Locator.” Claims 7 and 13 recite similar language. This limitation is indefinite because it is counter to what is known in the art, and the specification is ambiguous in its meaning. Specifically, in the art, a “read record” is sent from the terminal or reader device to the smart card. This is in response to the terminal receiving the Application File Locator (AFL) from the card, and is how the terminal instructs the card which records it requests to read. While page 3 of the specification, inter alia, describe “read record” similarly to the claims, page 4 describes “read record” similarly to the term’s use in the art. Therefore, the metes and bounds of the claims cannot be determined, and the claim is indefinite.
Regarding claim(s) 5, 11, and 17:
Claim 5 recites, “… setting, by the fingerprint card, a transaction refusal flag according to the rules stored in the fingerprint card.” Claims 7 and 13 recite similar language. This limitation is indefinite because it is unclear to what element the claimed “transaction refusal flag” is being applied, or what value is used as said flag. This rejection can be overcome by providing detail which would inform one skilled in the art where or how the claimed flag is being applied.
Regarding claims 2, 3, 6, 8, 9, 12, 14, 15, and 18:
They are dependent on one or more rejected claims, and thus inherit those rejections. This rejection could be overcome by overcoming the rejection(s) to any claims upon which these claims depend, or by amending the claims such that they are no longer dependent on any rejected claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 6-9, 12-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over ALMERS et al (Doc ID US 20200005304 A1), and further in view of HILL et al (Doc ID US 20070118483 A1), SÖDERBERG et al (Doc ID US 20230140424 A1), and CHATTERTON et al (Doc ID US 20160171361 A1).
Regarding claim 1:
ALMERS teaches:
obtaining, by the fingerprint card, a fingerprint of a user ([0040] "... The next time the user is to interact with a POS terminal 302 ..., the process of acquiring partial fingerprint representation of a portion of the user's fingerprint and extracting fingerprint features 308 is performed.");
verifying, by the fingerprint card, the fingerprint of the user ([0040] "… a similarity level is determined, S4, between the present set of extracted features 308 and the previously extracted fingerprint features 306. Specifically, the matching process implements a scoring functionality ...");
obtaining, by the fingerprint card, a fingerprint verifying result ([0041] "… If the score exceeds a certain threshold, the decision is match …");
determining, by an application controller in the fingerprint card, that a transaction with the specific transaction type is not refused ([0044] "… If a matching is conformed[sic], the authentication is performed and the payment will be made.");
HILL teaches the following limitation(s) not taught by ALMERS:
A method for communicating with a fingerprint card to perform transaction, comprising: receiving, by the fingerprint card, an instruction comprising a Processing Options Data Object List request from a terminal ([0035] "… the requires[sic] details may be provided in a list of terminal data objects (e.g., PDOL) associated with the reader 10." and [0036] "... the reader 10 transmits a third command message (e.g., GPO) to the card 22 responsive to the card's request for details concerning the capabilities of the reader 10 and transaction specific requirements ...");
obtaining, by the fingerprint card, a specific transaction type in the Processing Options Data Object List request ([0036] "… The third command message may comprise values for any number of data elements requested by the card 22. Various data element values indicate the type of transactions supported by the reader 10 …");
returning, by the fingerprint card, to the terminal a response comprising an Application Interchange Profile and an Application File Locator ([0039] "… the response may include an application file locator (AFL) ..., an application interchange profiles (AIP) …"); and
Obtaining a fingerprint with a smart card, verifying the fingerprint, and allowing or refusing a transaction based on the verification are known techniques in the art, as demonstrated by ALMERS. Further, exchanging a Processing Options Data Object List (PDOL), transaction type, Application Interchange Profile (AIP), Application File Locator (AFL), and read records between a smart card and terminal are known techniques in the art, as demonstrated by HILL. It would have been obvious to a person having ordinary skill in the art (PHOSITA) before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS with the standardized smart card operations of HILL with the motivation to use a well-known and globally used standard for commands issued between “chip cards” and card readers devices.
SÖDERBERG teaches the following limitations not taught by the combination of ALMERS and HILL:
sending, by the fingerprint card, to the terminal a waiting time extending instruction at a preset time interval ([0077] "FIG. 7 shows a timing diagram illustrating re-occurring WTX requests and the time periods required for the sensor 102 to capture fingerprint images.");
Sending a Wait Time Extension (WTX) during fingerprint capture is a known technique in the art, as demonstrated by SÖDERBERG. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS and HILL with the WTX instruction of SÖDERBERG with the motivation to ensure that a terminal being interacted with does not time out during the extra time needed for the smart card to obtain the user’s fingerprint.
CHATTERTON teaches the following limitations not taught by the combination of ALMERS, HILL, and SÖDERBERG:
determining, by the fingerprint card, that a terminal type of the terminal matches a specific terminal type ([0056] "… the payment card 10 may detect the type of card reader based on the pattern of magnetic signals detected at the read sensor 260.");
Determining a terminal type being interacted with by a smart card is a known technique in the art, as demonstrated by CHATTERTON. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, and SÖDERBERG with the terminal type determination of CHATTERTON with the motivation to provide terminal details to the card, which may then use that data to make decisions about interaction with the terminal in the future.
Regarding claim 2:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1, wherein obtaining, by the fingerprint card, the fingerprint verifying result (ALMERS [0041] "… If the score exceeds a certain threshold, the decision is match …");
then stopping, by the fingerprint card, sending the waiting time extending instruction to the terminal (SÖDERBERG [0077] "FIG. 7 shows a timing diagram illustrating re-occurring WTX requests and the time periods required for the sensor 102 to capture fingerprint images.").
Discontinuing sending of a WTX to a terminal is a known technique in the art, as demonstrated by SÖDERBERG. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, SÖDERBERG, and CHATTERTON with the WTX of SÖDERBERG with the motivation to allow the terminal to continue processing the transaction after the fingerprint is collected.
Regarding claim 3:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1, wherein the transaction is not refused by the application controller in the fingerprint card, according to the fingerprint verifying result, the specific transaction type and the specific terminal type (ALMERS [0044] "… If a matching is conformed[sic], the authentication is performed and the payment will be made.").
Regarding claim 6:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1, wherein obtaining, by the fingerprint card, the fingerprint verifying result comprises: determining, by the fingerprint card, whether a value of fingerprint obtaining retry times exceeds a preset count limit (ALMERS [0021] "… locking also may be done in case authentication attempts failed reaches an unacceptable level.").
Regarding claim 7:
ALMERS teaches:
A fingerprint card, comprising: a processor; an input/output device coupled to the processor; and a memory in communication with the processor, in which the memory stores instructions, configured to cause the processor to ([0035] The processing circuitry 104 further comprises a memory …" and "Where the processing circuitry 104 includes a ... Microprocessor ..., the processor may further include computer executable code that controls operation of the programmable device."):
The remainder of this claim’s limitations are rejected with the same prior art mapping and justification, mutatis mutandis, as its counterpart claim 1.
Regarding claims 8, 9, 12-15, and 18:
These claims are rejected with the same justification, mutatis mutandis, as their counterpart claims 1-3, 6, and 7 above.
Claims 4, 5, 10, 11, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over ALMERS et al (Doc ID US 20200005304 A1), HILL et al (Doc ID US 20070118483 A1), SÖDERBERG et al (Doc ID US 20230140424 A1), and CHATTERTON et al (Doc ID US 20160171361 A1) as applied to claims 1, 7, and 13 above, and further in view of GARDINER et al (Doc ID US 20160217453 A1).
Regarding claim 4:
The combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON teaches:
The method of Claim 1,
GARDINER teaches the following limitation(s) not taught by the combination of ALMERS, HILL, SÖDERBERG, and CHATTERTON:
wherein the transaction is refused or not refused by the application controller in the fingerprint card, based on one of the following rules stored in the fingerprint card: for any terminal, refusing any transaction if a fingerprint verifying result is not successful ([0036] "… The cardholder may then be required to provide a fingerprint scan for comparison with the biometric data in the ... record.", [0037] "... the authentication system 5 may authenticate the received biometric data ...", and [0038] "… At step S2-16, the merchant application 7a may complete or cancel the transaction, depending on the received authentication result.");
for a terminal with the specific terminal type, not refusing a transaction if a fingerprint verifying result is not successful; and
for any terminal without the specific terminal type, refusing the transaction if the fingerprint verifying result is not successful.
Refusing a transaction when a fingerprint verification is unsuccessful is a known technique in the art, as demonstrated by GARDINER. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, SÖDERBERG, and CHATTERTON with the cancelled transaction of GARDINER with the motivation to prevent the smart card from processing a transaction where the identity of a user cannot be verified. It is obvious to cancel a transaction rather than giving an unlimited amount of attempts to authenticate.
Regarding claim 5:
The combination of ALMERS, HILL, SÖDERBERG, CHATTERTON, and GARDINER teaches:
The method of Claim 4, wherein the method further comprises: setting, by the fingerprint card, a transaction refusal flag according to the rules stored in the fingerprint card (GARDINER [0036] "… The cardholder may then be required to provide a fingerprint scan for comparison with the biometric data in the ... record.", [0037] "... the authentication system 5 may authenticate the received biometric data ...", and [0038] "… At step S2-16, the merchant application 7a may complete or cancel the transaction, depending on the received authentication result.").
Refusing a transaction when a fingerprint verification is unsuccessful is a known technique in the art, as demonstrated by GARDINER. It would have been obvious to a PHOSITA before the effective filing date of the claimed invention to modify the smart card fingerprint verification of ALMERS, HILL, SÖDERBERG, and CHATTERTON with the cancelled transaction of GARDINER with the motivation to prevent the smart card from processing a transaction where the identity of a user cannot be verified. It is obvious to cancel a transaction rather than giving an unlimited amount of attempts to authenticate.
Regarding claims 10, 11, 16, and 17:
These claims are rejected with the same justification, mutatis mutandis, as their counterpart claims 4 and 5 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
ITO (Doc ID US 20070106905 A1) recites many of the same features as claimed in the instant application. However, it is directed to a card reader device as opposed to the card itself.
https://ambimat.com/step-by-step-how-does-a-emv-contact-card-payment-work/ is a website which explains the EMV transaction process and shows that several of the steps taken by the disclosed invention are steps which are well-known in the art. This reference is relevant as a background document but is not specific to the concepts of fingerprint verification as claimed in the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON BINCZAK whose telephone number is (703)756-4528. The examiner can normally be reached M-F 0800-1700.
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/BB/Examiner, Art Unit 2437
/BENJAMIN E LANIER/Primary Examiner, Art Unit 2437